WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Donnafugata S.r.l. v. 闫纪永 (Yan Ji Yong)

Case No. D2020-3116

1. The Parties

The Complainant is Donnafugata S.r.l., Italy, represented by Barzanò & Zanardo Milano S.p.A., Italy.

The Respondent is 闫纪永 (Yan Ji Yong), China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <donnafugata.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2020. On November 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On the same day, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Complainant filed an amendment to the Complaint in English.

On November 23, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. On November 27, 2020 and December 30, 2020, the Respondent requested that Chinese be the language of the proceeding.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceedings commenced on December 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2021. On January 3, 2021, the Respondent requested an extension of time to file the Response. On January 6, 2021, the Center in accordance with the Rules exceptionally granted an extension of time until January 14, 2021. The Response was filed with the Center in Chinese on January 13, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on February 19, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is an Italian wine producer established in 1983. Its wines are sold internationally, including in China, where they have been distributed since 2005. The Complainant is the owner of multiple trademark registrations, including International trademark registration number 818651 for a semi-figurative mark featuring DONNAFUGATA, registered on September 29, 2003, designating multiple jurisdictions, including China, and specifying wine and alcoholic beverages in class 33; and International trademark registration number 1401812 for DONNAFUGATA, registered on March 13, 2018, designating multiple jurisdictions, including China, specifying alcoholic beverages [except beers], wines, in class 33. Those trademark registrations remain current. The Complainant also registered the domain name <donnafugata.it> that it uses in connection with a website where it provides information about itself and its products in Italian, English and German.

The Respondent is an individual resident in China. According to evidence provided by the Complainant, the Respondent’s contact email address is associated with various other domain names, some of which include English words, such as <file4share.com> and <parkingview.com>.

The disputed domain name was acquired by the Respondent on May 5, 2020. It does not resolve to any active website; rather, it is passively held.

“Donnafugata” is the name of a castle in Sicily. The name is formed by the word “donna” (meaning “woman” in Italian) and “fugata” (meaning “fled” in Sicilian dialect). It may possibly derive from a folk tale.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s DONNAFUGATA trademarks.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant denies that the Respondent is an authorized dealer, agent, distributor, wholesaler or retailer of the Complainant. The Complainant has never authorized any third party – linked or not to China market – to include its trademarks in the disputed domain name, nor to make any other use of its trademarks in any manner whatsoever. The Complainant also confirms that it is not in possession of, nor aware of the existence of, any evidence tending to demonstrate that the Respondent is commonly known by the disputed domain name, as an individual, business, or other organization.

The disputed domain name was registered and is being used in bad faith. The Respondent could not ignore the existence of the DONNAFUGATA trademark at the time of the registration of the disputed domain name. Passive holding does not prevent a finding of bad faith use. In the present case, the trademark has a high degree of distinctiveness or reputation; the Respondent has failed to provide any evidence of actual or contemplated good-faith use; the Respondent has concealed its identity; and it is implausible that the disputed domain name may be put to a good faith use. The Respondent registered the disputed domain name in 2007. The disputed domain name redirected at least in 2009 to a parking page with sponsored links related to DONNAFUGATA products and where the disputed domain name was also offered for sale; and later until at least 2018 it redirected to a parking page where it was offered for sale.

B. Respondent

The Respondent acquired the disputed domain name on April 29, 2020. Since that time, it has not infringed any rights or interests of the Complainant nor obtained any benefit from the disputed domain name. The disputed domain name has not been activated yet; it is being held to prepare for the Respondent’s future website. The evidence provided by the Complainant relates to the prior use of the disputed domain name before the Respondent obtained it and had no means of controlling it. The Complainant used evidence regarding the former use of the disputed domain name in bad faith. Since the Complainant knew that the disputed domain name was previously for sale, why didn’t it resolve the matter then instead of waiting for the Respondent to acquire the disputed domain name before initiating a dispute? The Complainant acted in bad faith.

The Complainant’s trademarks are not well-known marks in China; they are just ordinary marks. The Complainant only applied for its trademark registration in China in 2018, long after the registration of the disputed domain name in 2007. The Respondent has made no use of the disputed domain name since it acquired it in 2020 and there has been no trademark infringement. The Complainant’s website is only available in English, Italian and German, and has no Chinese version. In other words, the Complainant has not really entered the Chinese market and its marks are not well-known. In China, almost nobody knows the meaning of “donnafugata”. The Respondent only bought the disputed domain name to use in future for a clothing brand. The Respondent has not offered the disputed domain name for sale either.

Prior to the commencement of this dispute, an agent of the Complainant sent several emails to the Respondent seeking to acquire the disputed domain name. The Respondent did not reply because he was going to set up a website. When the Complainant was unable to purchase the disputed domain name, it initiated this procedure to seize the disputed domain name from the Respondent, which is clearly in bad faith.

6. Discussion and Findings

6.1. Procedural Issues

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the Complainant does not understand Chinese and it would be quite burdensome and expensive to translate the Complaint with all its annexes, and this would also unnecessarily delay the procedure; the disputed domain name formerly resolved to webpages in English; and the Respondent’s email address is associated with other domain names composed of English words.

The Respondent requests that the language of the proceeding be Chinese. His main arguments are that the Registration Agreement is in Chinese; he can only read Chinese; and his other domain names are registered in China and resolve to websites displayed in Chinese in China without content in English.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint and amended Complaint were filed in English and the Response was filed in Chinese. The Respondent’s contact email address is associated with domain names that are composed of English words which suggests that he is able to communicate in that language even though the websites to which they resolve may be displayed in Chinese when accessed from China. Moreover, the detailed Response demonstrates that the Respondent has clearly understood the amended Complaint and its annexes. Therefore, the Panel considers that requiring either Party to translate its submissions would create an undue burden and delay, whereas accepting all submissions in their original language without translation will not cause unfairness to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English, but that the Panel will accept all documents as filed in their original language, whether English or Chinese, without translation.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the DONNAFUGATA marks.

The disputed domain name wholly incorporates the DONNAFUGATA wordmark as its only distinctive element.

The disputed domain name also wholly incorporates the sole non-figurative element of the semi-figurative DONNAFUGATA mark, i.e., the word “Donnafugata”. For technical reasons, the disputed domain name cannot include the figurative element of that trademark, hence that other element can be disregarded in the comparison between the disputed domain name and this mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.10.

The disputed domain name also includes a generic Top-Level Domain (“gTLD”) (“.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.

Therefore, the Panel finds that the disputed domain name is identical to one trademark, and confusingly similar to another trademark, in both of which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The disputed domain name is identical to the Complainant’s DONNAFUGATA mark. The Complainant submits that the Respondent is not an authorized dealer, agent, distributor, wholesaler or retailer of the Complainant and that the Complainant has never authorized any third party to include its trademarks in the disputed domain name.

As regards the first and third circumstances set out above, the disputed domain name resolves to an error page. Accordingly, the Panel does not consider the Respondent’s use of the disputed domain name to be in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use of the disputed domain name within the circumstances of paragraph 4(c)(iii) of the Policy.

As regards the second circumstance set out above, the Respondent’s name is listed in the Registrar’s WhoIs database, and set out in the Response, as 闫纪永 (Yan Ji Yong), not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Turning to the Respondent’s arguments, he acknowledges that he has made no active use of the disputed domain name and claims that he acquired the disputed domain name to use at some future time with a clothing brand. However, he provides no evidence of any preparations to use the disputed domain name in connection with such an offering of goods. He puts forward no other claims of rights or legitimate interests. Accordingly, the Respondent has failed to rebut the Complainant’s prima facie case.

Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

With respect to registration, the disputed domain name was not acquired by the Respondent until 2020, years after the registration of the Complainant’s DONNAFUGATA marks in 2003 and 2018, including in China where the Respondent is resident. “Donnafugata” is not a dictionary word. The disputed domain name wholly incorporates the DONNAFUGATA trademark, adding only a gTLD. The Complainant has acquired a considerable reputation in its DONNAFUGATA marks, including in mainland China, as evidenced by the fact that its wines have been distributed in that country since 2005 and all the search results for “Donnafugata” in the Baidu search engine refer to the Complainant or its products. Although the Respondent questions the extent of the Complainant’s reputation in China, he offers no explanation as to why he registered the Complainant’s trademark in the disputed domain name if he did not know of it already. Accordingly, the Panel considers it likely that the Respondent knew of the Complainant’s mark at the time he registered the disputed domain name.

With respect to use, the Respondent acknowledges that he makes no active use of the disputed domain name. However, the Panel recalls that passive holding does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the disputed domain name wholly incorporates the DONNAFUGATA trademark, adding only a gTLD. The Complainant has acquired a considerable reputation in its DONNAFUGATA marks, particularly in the wine sector, including in mainland China, where the Respondent is resident. While the Respondent claims that he plans to use the disputed domain name in future for a clothing brand, he fails to substantiate that assertion. Even though the Respondent may not have offered to sell the disputed domain name, in all these circumstances, the Panel considers it more likely than not that the Respondent is using the disputed domain name in bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

D. Reverse Domain Name Hijacking

Paragraph 15(e) of the Rules, provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking, or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. “Reverse Domain Name Hijacking” is defined in paragraph 1 of the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

The Respondent alleges that the Complainant has engaged in reverse domain name hijacking because it initiated this proceeding after it failed to obtain the disputed domain name by purchase.

The Panel does not find that the Complaint was brought in bad faith. On the contrary, the Panel has upheld the Complaint.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <donnafugata.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: February 25, 2021